The Complainant is Adobe Systems Incorporated of San Jose, California, United States of America ("U.S."), represented by Stobbs IP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mihail Kutuzov of Kamianske, Dnipropetrovsk Oblast, Ukraine, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Hosting Concepts B.V. d/b/a Openprovider (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 18, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 24, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2018. The Response was filed with the Center on June 7, 2018.
The Center received a further email communication from the Respondent on June 18, 2018.
The Center appointed Olga Zalomiy as the sole panelist in this matter on June 22, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is one of the largest providers of software products worldwide. The Complainant is the owner of the BEHANCE trademark in many jurisdictions. Among them are the following registrations:
- U.S. Trademark Registration for the BEHANCE mark, No. 3503191, registered on September 16, 2008;
- European Union Trade Mark Registration for the BEHANCE mark, No. 11797263, registered on September 20, 2013.
The Respondent registered the Domain Name on December 6, 2016. The Domain Name used to resolve to a website, where users can purchase "views" and "likes" from the Respondent's BeTop service to increase the popularity of their work on the Complainant's Behance platform.
At the time of the rendering of this decision, the Domain Name does not resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant asserts that it is the second largest U.S. based personal software company, which was founded in 1982. The Complainant claims that it is the owner of the BEHANCE brand and owns 54 registrations and one pending application for the BEHANCE mark. The Complainant claims that the Domain Name is confusingly similar to its BEHANCE trademark because it incorporates the well-known term "behance" verbatim. The Complainant argues that the addition of the hyphen and the generic word "top" does nothing to dissipate the confusing similarity. The Complainant contends that the term "top" is allusive of the service that the Respondent offered on the website associated with the Domain Name, i.e., user promotion to the "top" of the Behance community rankings. The Complainant submits that the generic Top-Level Domain ("gTLD") suffix ".com" should be omitted from the assessment of the Domain Name because is it a technical requirement of domain name registrations.
The Complainant alleges that the Respondent does not have any rights or legitimate interests in the Domain Name for several reasons:
- The composition of the Domain Name indicates illegitimate intent because it includes the Complainant's well-known BEHANCE trademark in its entirety, which creates high risk of implied affiliation with the brand;
- The Respondent is using the Domain Name to promote its business venture BeTop;
- The Respondent has never been known as "Behance". Rather, it is known as BeTop;
- The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, because the Respondent is using the Domain Name to promote its BeTop business;
- The Respondent's website does not accurately disclose the Respondent's relationship or lack of it with the Complainant.
The Complainant contends that the Domain Name has been registered and used in bad faith. The Complainant submits that its BEHANCE trademark had been in existence for several years prior to the date of Domain Name registration. The Complainant asserts that the BEHANCE trademark is well-known. Based on the references to the Complainant's trademark that the Respondent made on the website
"www.", the Complainant concludes that the Respondent was fully aware of the Complainant's trademark and chose to register the Domain Name with the Complainant's trademark in mind. The Complainant alleges that the Respondent is using the Domain Name to attract the Complainant's customers to the Respondent's website, where users can improve their rankings, by obtaining false endorsement (i.e., likes and views), from the Respondent's BeTop service. The Complainant contends that the Respondent registered the Domain Name primarily for the purpose of disrupting the Complainant's business because evidence shows that the Respondent is using the Domain Name to allow users to obtain false endorsements which undermines the purpose of the Complainant's BEHANCE product. The Complainant alleges that the Respondent's use of the Domain Name has been calculated to harm the Complainant's business inasmuch as Internet users will lose faith in the endorsements on the Complainant's Behance software. The Complainants asserts the Respondent cannot claim any legitimate use of the
well-known mark BEHANCE, because the Respondent is using it without a license or permission from the Complainant. B. Respondent
In his response, the Respondent stated that "[t]he Respondent consents to the remedy requested by the Complainant and agrees to the disputed domain name(s)". When asked to clarify his response, the Respondent informed the Center that he "turned off" the website associated with the Domain Name and would not turn the website back on again. The Respondent further asked if it was also necessary to transfer the Domain Name to the Complainant and, if yes, how to do it. 6. Discussion and Findings 6.1. Consent to Transfer
Preliminary Issue:
Section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") considers whether a UDRP panel can decide a case based on the respondent's consent to transfer:
"In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent's consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights."
The Panel has decided to proceed to a substantive decision on the merits because the Respondent has never provided an unequivocal consent to transfer of the Domain Name to the Complainant and the Complainant has not agreed to accept such consent. 6.2. Substantive Matters
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant owns the BEHANCE trademark by virtue of its trademark registrations. Pursuant to section 1.2.1 of the WIPO Overview 3.0, "[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case."
The Domain Name is confusingly similar to the Complainant's BEHANCE trademark, because it incorporates the mark in its entirety. "Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."1 Neither addition of a hyphen, nor the addition of a descriptive term "top"2 prevents a finding of confusing similarity. The addition of the gTLD ".com" is disregarded under the confusing similarity test.3
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant's BEHANCE trademark and the first element of the UDRP has been satisfied. B. Rights or Legitimate Interests
Under the second UDRP element, the Complainant must make a prima facie case in respect of the lack of the Respondent's rights or legitimate interests in the Domain Name.
The Panel finds that the Complainant has made out a prima facie case by asserting the following:
- The Respondent does not use the Domain Name in connection with a bona fide offering of goods or services because the Respondent is using the Domain Name to promote its business venture BeTop;
- The Respondent has never been known as "Behance". Rather, he is known as BeTop;
- The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, because the Respondent is using the Domain Name to promote its BeTop business;
- The Respondent's website does not accurately disclose the Respondent's relationship or lack of it with the Complainant.
Once the complainant has made out the prima facie case, the respondent carries the burden of producing evidence demonstrating it has rights or legitimate interests in the domain name.4 Where the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.5 Here, the Respondent has not asserted any rights or legitimate interests in the Domain Name. Instead, the Respondent deactivated its website and stated that he would not "turn it on" again. The Respondent also inquired if he also had to transfer the Domain Name to the Complainant. The Panel finds that the Respondent implicitly conceded that he lacks rights or legitimate interests with respect to the Domain Name.
The second element of the UDRP has been satisfied. C. Registered and Used in Bad Faith
Under the third element, the Complainant is required to prove the Domain Name was registered and is being used in bad faith.
The UDRP describes several non-exhaustive circumstances demonstrating a respondent's bad faith registration and use. Under paragraph 4(b)(iv) of the UDRP, a panel may find bad faith when a respondent "[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] website or location or a product or service on [the respondent's] website or location."
The Panel finds that in the absence of any evidence to the contrary, the Respondent must have registered the Domain Name with the Complainant's mark in mind, to profit from the Complainant's mark goodwill. Previously, the Respondent used the Domain Name to take advantage of the Complainant trademark's reputation by attracting customers to the Respondent's website, where users can improve their Behance rankings, by obtaining false endorsement (i.e., likes and views), from the Respondent's BeTop service.
Currently, the Respondent made its "www." website inactive and is currently not using the Domain Name. However, "the presence of the Domain Name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use."6 Thus, the Panel holds that the Respondent's current passive holding of the Domain Name amounts to bad faith use of the Domain Name.
Finally, the Panel notes that the Respondent did not rebut the Complainant's contentions of the Respondent's bad faith registration and use of the Domain Name. Instead, the Respondent deactivated his website, stated that he would not "turn it on" again, inquired if transfer of the Domain Name to the Complainant was necessary and, if so, how he could do it.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: July 5, 2018
1 Section 1.7, WIPO Overview 3.0.
2 Section 1.8, WIPO Overview 3.0.
3 Section 1.11.1, WIPO Overview 3.0.
4 Section 2.1, WIPO Overview 3.0.
5 Id.
6 Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited,WIPO Case No. D2014-1564.
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